Loggerhead Tools, LLC v. Sears Holdings Corporation

Filing 456

MOTION by Defendants Apex Tool Group, LLC, Sears Holdings Corporation, Counter Claimants Apex Tool Group, LLC, Sears Holdings Corporation for judgment as a Matter of Law (Attachments: # 1 Table of Appendices, # 2 Appendix 1, # 3 Appe ndix 2-1, # 4 Appendix 2-2, # 5 Appendix 2-3, # 6 Appendix 2-4, # 7 Appendix 2-5, # 8 Appendix 2-6, # 9 Appendix 2-7, # 10 Appendix 2-8, # 11 Appendix 2-9, # 12 Appendix 2-10, # 13 Appendix 3 - PTX 1, # 14 Appendix 3 - PTX 3, # 15 Appendix 3 - PTX 4, # 16 Appendix 3 - PTX 51, # 17 Appendix 3 - PTX 119, # 18 Appendix 3 - PTX 157, # 19 Appendix 3 - PTX 175, # 20 Appendix 3 - PTX 467, # 21 Appendix 3 - PTX 503, # 22 Appendix 4 - DTX 1, # 23 Appendix 4 - DTX 2 , # 24 Appendix 4 - DTX 3, # 25 Appendix 4 - DTX 5, # 26 Appendix 4 - DTX 7, # 27 Appendix 4 - DTX 8R, # 28 Appendix 4 - DTX 9, # 29 Appendix 4 - DTX 9R, # 30 Appendix 4 - DTX 11, # 31 Appendix 4 - DTX 11R, # 32 Appendix 4 - DTX 23, # 33 Appendix 4 - DTX 24, # 34 Appendix 4 - DTX 74, # 35 Appendix 4 - DTX 75, # 36 Appendix 4 - DTX 212, # 37 Appendix 4 - DTX 213, # 38 Appendix 5)(Sernel, Marcus)

APPENDIX 1

520
Cagan - Direct by Skiermont
1

you've just made?

2

A

I have.

3

Q

And can you describe for the jury what is on the left and

4

right side of Cagan 82?

5

A

6

On the right is the Max Axess wrench.

7

first elements are in blue, the second elements in orange.

Yes.

And you can see the

Now, one of the things you'll note is that, first of

8
9

So on the left is the patent, the Loggerhead patent.

all, the order of the plates is different.

Secondly, you'll

10

note that there's two second elements that are visible or shown

11

for the Max Axess, but only one shown in this particular

12

embodiment of the '470 patent.
And it doesn't matter.

13

They still meet the require --

14

Max Axess still meets every requirement of claim 1.

As a

15

matter of fact, that first -- sorry, that second element of the

16

four of the different Loggerhead patents could be made with two

17

pieces.

18

Q

19

them what you're talking about.

20

mean, I'm sorry, the second --

21

A

Second.

22

Q

-- element of the figure in the patent.

23

A

Hopefully this will work -- oh, it does, okay.

24

particular figure --

25

Q

If you don't mind clicking to the next slide, please.

Yes, would you, using your red -- press the screen to show

Go ahead.

The first element of -- I

So this

521
Cagan - Direct by Skiermont
1

A

And so there's no reason why that can't be, for example,

2

made of two pieces.

3

button, you'll see that.

If you don't mind clicking the next

And as a matter of fact, if you look at your

4
5

Loggerhead Bionic wrench, which is an instantiation of the

6

patent, it's made with two panels, two pieces.

7

Q

8

you were noting that the Bionic Wrench -- the Bionic Wrench's

9

orange second element is, in fact, a two-piece assembly?

10

A

And what you were indicating there to the jury, Dr. Cagan,

That's correct.
Now, if you can -- I'd like to -- but if -- again, in

11
12

terms of the overall functioning and the requirements of the

13

claims that we've looked at, you'll see that they are the same.

14

And as a matter of fact, if you can -- you're about to

15

see what will happen is we'll bring -- bringing these two

16

elements back together where we were and then again you'll

17

watch both of these tools function if you don't mind, please,

18

sir.
So they come together again so that's where we were.

19
20

Now everything's assembled.

And as the elements are -- as the

21

elements are brought together, the crimping elements actually.

22

Q

23

Wrench.

24

Is that right, Dr. Cagan?

25

A

And on the left hand, there is the depiction of the Bionic
And on the right hand is the Max Axess Locking Wrench.

Well, the one on the left is the different Loggerhead

528
Cagan - Cross by Sernel
1

A

Up to down -- yes, except it would have the body portion

2

which you're about to show.

3

some depth to it obviously.

4

Q

5

the bottom of the screen of the Bionic Wrench gripping element,

6

correct?

7

A

Correct.

8

Q

And then the two things sticking up, those are the arm

9

portions in the Bionic Wrench gripping element, correct?

Below, I assume, needs to have

So the body portion is the portion here on the bottom --

10

A

Correct.

11

Q

Now --

12

A

Can I just see it first?

13

Q

I'm going to show the jury, then I'll bring it to you.

14

A

Okay.

15

Q

This is what we're going to put on the screen.

16

this is the gripping element in the Max Axess Locking Wrench

17

product.

I believe

(Object tendered to the witness.)

18

THE WITNESS:

19

That's correct.

20

BY MR. SERNEL:

21

Q

22

the force transfer element's been removed, correct?

23

A

Correct.

24

Q

But the reason why we're here is you say that this block

25

has both a body portion and an arm portion, correct?

And again, we had nothing poking through the holes here, so

That's

529
Cagan - Cross by Sernel
1

your opinion?

2

A

MR. SERNEL:

3
4

It is.
I'd like to, if possible, your Honor,

could I just hand the little -- the parts --

5

THE COURT:

6

MR. SERNEL:

7

THE COURT:

-- to the jury?
Sure.

(Objects published to the jury.)

8
9

Sure.

BY MR. SERNEL:

10

Q

Let's talk a little bit about your work as an expert.

11

A

Okay.

12

Q

I think I heard during direct that your typical hourly rate

13

for your expert work is $400 an hour, correct?

14

A

Correct.

15

Q

That's what you're being paid for, for your testimony and

16

all the work that you've done in this case, correct?

17

A

My time, correct.

18

Q

Now, this isn't the first time you've done expert work in

19

litigation, correct?

20

A

Correct.

21

Q

You've done it for a variety of different clients in a

22

variety of different subject matter, correct?

23

A

A few.

24

Q

One of the subject matters on which you've offered expert

25

testimony in a prior patent case is on an automatic cow milking

553
Cagan - Cross by Sernel
1

For right now, you can leave it.
MS. TINKHAM:

2
3

Your Honor, plaintiff Loggerhead now

calls Mr. Barry Pope by video deposition.
THE COURT:

4

All right.

We'll get started with that.

5

Ladies and gentlemen, once again, a video deposition is for you

6

to consider just as you would any other evidence.

7

All right.

8

MS. TINKHAM:

9
10

13

45 minutes.
THE COURT:

We'll do about 15 minutes, and then we'll

give the jurors a break and then finish.
(Video recording played in open court.)
MR. SKIERMONT:

14
15

By way of background, Mr. Pope is the

former manager of Craftsman hand tools and the video is about

11
12

So I need to switch the computer, correct?

Is this a good time for a break, your

Honor?

16

THE COURT:

17

Ladies and gentlemen, we'll take a short recess.

18
19

Yeah, let's take a break.

(Recess at 2:40 p.m., until 2:55 p.m.)
THE COURT:

All right.

You may be seated.

20

continue further with the video deposition.

21

We'll

(Video recording played in open court.)

22

MS. TINKHAM:

Loggerhead would like to move Mr. Pope's

23

exhibits into testimony.

24

end of the day so as not to --

25

THE COURT:

I have a list that we can do at the

We can do that at the end of the day,

554

1

that's fine.
MS. TINKHAM:

2

The next witness is Jill Lowe, and her

3

video is going to take about 40 minutes.

4

one more video to play.

After that, we have

It's about an hour.

5

So if you want to let us know what time we should cut

6

that off because that will put us, I think, over 5:00 o'clock.
THE COURT:

7

It will go past 5:00 o'clock.

All right.

8

Well, why don't we get started with the next video and once

9

again take a break in the middle, maybe after 10, 15 minutes.
MS. TINKHAM:

10
11

And Ms. Lowe is vice president of

national retail accounts at Apex Tools.
THE COURT:

12
13

Okay.

Okay, great.

Thank you.

(Video recording played in open court.)
THE COURT:

14

We'll take a short break.

And we will

15

finish this deposition today and then get started on the next

16

one.

17
18
19
20
21
22
23
24
25

We won't finish that last one today.

(Recess at 3:44 p.m. until 4:00 p.m.)

1063
Owen - Redirect by Hayes
1

words, that the Buchanan plunger of a block with a pin through

2

it doesn't have an arm portion.

3

Q

4

is that related to the Max Axess gripping element in this case?

5

A

6

plunger, is a basic block with a pin through it.

7

are very similar in that regard.

8

language, they're both essentially blocks with pins through

9

them.

We've been talking a lot about the Buchanan plunger.

How

Well, the Max Axess gripping element, like the Buchanan
So the two

Relevant to the claim

10

Q

If we can turn to the next page, Loggerhead 1836.

11

And if

we could pull up the first full paragraph there.
Again, I want to call your attention to the first two

12
13

sentences and then the last sentence.

14

this portion affected your design guidance in this case, Mr.

15

Owen.

16

A

17

Loggerhead is saying specifically Buchanan's gripping element

18

does not contain an arm portion, and instead that the force

19

transfer element is directly attached to the body.

20

they also say that Buchanan does not teach or suggest an arm

21

portion.

22

Certainly.

I took a look at this.

If you could explain how

This is where

And then

So if Buchanan's approach of a block with a pin

23

through it doesn't have an arm portion, then from a design

24

guidance standpoint, a design that uses a block with a -- a

25

simple block with a pin -- a pin through it, much like

1064
Owen - Redirect by Hayes
1

Buchanan, then that shouldn't be within the scope of their

2

claims either.

3

Q

4

for its gripping element in this case?

5

A

And what design does the Max Axess Locking Wrench utilize

It uses a simple block with a pin through it.

6

MR. HAYES:

Thank you.

No more questions, your Honor.

7

THE COURT:

All right.

Recross-examination.

8

MS. SPENCER:

9

THE COURT:

10
11

No, your Honor.

Ladies and gentlemen of the jury, do any

of you have any questions for this witness?
(No response.)

12

THE COURT:

13

THE WITNESS:

14

THE COURT:

All right.

15

MR. HAYES:

Your Honor, defendants call Professor

16
17
18

Mr. Owen, you may step down.
Thank you.
The defendants' next witness.

Frank Fronczak.
THE COURT:
right there.

Thank you.

You can just leave that stuff

Thank you.

19

And it's Professor Fronczak?

20

THE WITNESS:

21

THE COURT:

22

THE WITNESS:

23

THE COURT:

24

THE WITNESS:

25

Pardon?

It's Professor Fronczak?
Yes.

Yes, ma'am.

Can I ask you to raise your right hand.
I'm sorry, yes, your Honor.

(Witness duly sworn and takes the stand.)

1065
Fronczak - Direct by Hayes
1

THE COURT:

You may be seated.

2

MR. HAYES:

Your Honor, may I approach?

3

THE COURT:

You may.

(Exhibits tendered to the witness.)

4
5

THE WITNESS:

Thank you.

6

MR. HAYES:

May I proceed, your Honor?

7

THE COURT:

You may.

8

FRANK FRONCZAK, DEFENDANTS' WITNESS, SWORN

9

DIRECT EXAMINATION

10

BY MR. HAYES:

11

Q

12

jury.

13

A

Good afternoon.

14

Q

Professor Fronczak.

15

A

Sure.

16

Q

Professor Fronczak, what is your role in this case?

17

A

I'm a technical expert in the case.

18

Q

And as a technical expert in this case, did you provide

19

opinions?

20

A

Yes, I did.

21

Q

Before we get into your opinions, I'd like to talk a little

22

bit about your background.

23

A

Sure.

24

Q

On opening, Mr. Skiermont, I think, inadvertently said that

25

you're from Michigan.

Good afternoon.

Could you please introduce yourself to the

I'm Frank Fronczak.
Is that okay?

1066
Fronczak - Direct by Hayes
Professor Fronczak, where were you born and raised?

1
2

A

I was born and raised in the Back of the Yards of Chicago,

3

and I've never lived in Michigan.

4

Q

5

heard a lot about hand tools.

Professor Fronczak, this is a case about hand tools.

We've

What was your first experience in life with hand

6
7

tools?

8

A

9

after World War II, came back and opened up a hardware store.

A little background.

My family, my father and my uncle

10

We lived -- the family lived in a flat above the hardware store

11

on 47th Street.

12

since I was a little boy.

And so I worked in the hardware store ever

My uncle had been a machinist, worked with him.

13

My

14

father had been a plumber before the war, a pipefitter, plumber

15

before the war.

16

we were kids.

And so we started working with hand tools when

Started tearing apart cars when I was probably about

17
18

12 because I had an older brother.

So he got me into cars.

19

took our bikes apart, put new rear ends in bikes.

20

was done with hand tools.

21

Q

22

Where did you go to high school?

23

A

24

Yards, I went to school far southwest side at Brother Rice.

25

Q

We

All of this

Professor Fronczak you said you grew up on the South Side.

I went to school -- even though I lived in Back of the

What year did you graduate from Brother Rice High School?

1067
Fronczak - Direct by Hayes
1

A

It would have been 1968.

2

Q

Through the years, have you had a chance to work with and

3

collect some tools, hand tools.

4

A

Yes I have.

5

Q

How many tools do you own today, Professor Fronczak?

6

A

Easily, easily more than a thousand.

7

my grandfather, some I inherited from my father.

8

purchased.

9

Q

I'm what's called a gearhead.

Some I inherited from
Some I

Some I designed and built my own.

So Professor Fronczak, to help with your testimony today,

10

did you prepare a set of slides?

11

A

MR. HAYES:

12
13

Yes, I did.
We're going to pull up those slides, Josh,

if we can have those.

14

THE COURT:

Are we in the right place here?

15

MR. HAYES:

We are, your Honor.

16

THE COURT:

Okay.

17

BY MR. HAYES:

18

Q

19

training, Professor Fronczak.

20

A

Sure.

21

Q

After graduating from Brother Rice High School, did you go

22

to college?

23

A

Yes, I did.

24

Q

Where did you go to college?

25

A

I went -- started off with bachelor's.

I'd like to start by talking about your education and

I earned a

1068
Fronczak - Direct by Hayes
1

bachelor's at the University of Illinois in Urbana-Champaign.

2

Q

3

in?

4

A

5

degree between mechanical and civil engineering at the time.

6

Q

What year did you graduate from the University of Illinois?

7

A

With my bachelor's degree, it was 1972.

8

Q

After your bachelor's degree, did you go on and get a

9

master's degree?

And what was your area of study, or what was your degree

My degree was in general engineering, which is a hybrid

10

A

11

my master's degree in theoretical and applied mechanics at

12

Illinois, and that was in 1974.

13

Q

14

theoretical and applied mechanics might be about?

15

A

16

It's been common across the different universities to abandon

17

theoretical applied mechanics departments and typically mold

18

them into or bring them over to a mechanical engineering

19

department.

20

I continued on at Illinois, yes, and I received -- earned

Can you explain for the jury just a little bit about what

Sure.

At the time -- the department no longer exists.

That's what was done at Illinois.

So there is no more theoretical applied mechanics

21

department at Illinois.

It's part of mechanical engineering.

22

So applied -- well, theoretical and applied mechanics,

23

mechanics is the study of subjects which are relevant to a wide

24

variety of engineering things such as vibrations, strength of

25

materials, fluid mechanics and so on.

1069
Fronczak - Direct by Hayes
So these are things that engineers -- the fundamentals

1
2

that engineers learn that they then use to apply.

And so

3

theoretical and applied mechanics, the department was the

4

oldest department of theoretical and applied mechanics in the

5

country.

6

application aspects of it.

7

Q

8

get any more formal education?

9

A

Yes, I did.

10

Q

What was that?

11

A

It was a doctor of engineering degree at the University of

12

Kansas.

13

Doctor of Philosophy.

And it had the theory on one end, but it had also the

Professor Fronczak, after getting your master's, did you

And notice it's not a Ph.D.

It's Ph.D. stands for

University of Kansas started a doctor of engineering

14
15

program in conjunction with NASA, Stanford, MIT, Tulane,

16

Kansas, I think were all part of this program where NASA said

17

they needed more application-oriented, high-level engineers.
So the rigor, the requirements were the same, but the

18
19

nature of the work was more application-oriented rather than

20

theoretical-oriented.

21

Q

22

University of Kansas?

23

A

24

National Aeronautics and Space Administration, to do my

25

research.

What was the focus of your doctor of engineering at the

I did coursework at Kansas, but then I worked at NASA,

And my project was I designed a machine for rotating

1070
Fronczak - Direct by Hayes
1

and shaking a helicopter blade in a vacuum, full-size

2

helicopter blade, and then measuring the response of the blade

3

to the hydraulic input that we had given it, the force in

4

motion input that we gave into the hub of the blade.
So the blade is rotating around.

5

It's shaking up and

6

down, twisting back and forth.

We made it do these things.

7

And then we had a system that I designed that would be able to

8

measure the mode shapes, the shapes of this motion that's doing

9

like this.

It looks like a wet noodle.

10

Q

Professor Fronczak, I'd like to move on now to your work

11

experience.

12

A

Sure.

13

Q

You mentioned that you worked for your dad or in your dad's

14

hardware store during high school.
Did you have any jobs during college?

15
16

A

Yes, I did.

17

Q

What were those jobs?

18

A

Well, I started off working at Central Steel & Wire as a

19

laborer after my sophomore year.

20

small business that she had bought out selling drafting board

21

tops, and I worked for her.

22

in the day, and then second shift, I worked at Central Steel &

23

Wire as a laborer.

24
25

I also worked -- my mom had a

And then I worked for my dad store

That was sophomore year.

After my junior year, I got a job as a -- that was as
a pack -- I'm sorry, as a baby powder processing engineer at

1071
Fronczak - Direct by Hayes
1

Johnson & Johnson on the South Side of Chicago, southwest side

2

of Chicago.
And then after my senior year, I had completed all my

3
4

coursework except for one accounting course that I still had to

5

take care of.

6

don't know what it's called now, but it used to be Ford City

7

College by Ford Center -- or Ford -- by Ford City.
And I had another job at Johnson & Johnson.

8
9

So I took care of that at Ford City College.

I

There, I

was working as a packaging engineer.

10

Q

What was your next job after working at Johnson & Johnson

11

as a packaging engineer?

12

A

13

Illinois, in the summers and then during breaks and during the

14

year, I also worked as a project engineer for Clark Deitz &

15

Associates.

16

Champaign-Urbana.

Then while I was in grad school at the University of

That's a consulting engineering firm in
It's in Urbana.

And then I also was a teaching assistant in the --

17
18

started off in general engineering department, and then I moved

19

over to theoretical and applied mechanics department and taught

20

strength and materials there.

21

Q

22

engineer, what was your next job?

23

A

24

doctorate at Kansas.

25

where I was back and forth between campus and NASA.

After working for Clark Deitz & Associates as a project

Well, then I went to graduate -- or I'm sorry, for my
And while I was working at Kansas, that's

1072
Fronczak - Direct by Hayes
So I was really working as a project engineer for my

1
2

thesis project while I was a grad student at NASA -- I'm sorry,

3

while I was a grad student at Kansas.

4

Q

After that, what was your next job?

5

A

After I finished up my doctorate, I moved to Madison,

6

Wisconsin, and I was employed by the Forest Products Lab, which

7

is part of the Forest Service, which is part of the U.S.

8

Department of Agriculture.
So I was an engineer for the U.S. Department of

9
10

Agriculture primarily -- well, within the Forest Service at the

11

Forest Products Lab in Madison.

12

Q

13

Products Lab?

14

A

15

product and process.

16

of machines for processing large logs into veneer.

What type of engineering work were you doing at the Forest

I was doing mechanical design work.

I was designing both

But most of my work involved the design

So when you think of veneer, that's plywood.

17

So

18

plywood is made out of veneer.

19

processing the turning the logs into veneer.

20

Q

21

your next job?

22

A

23

forest project -- Forest Products Lab, I decided I wanted to

24

also start doing some teaching.

25

I was designing machines for

After working for the Department of Agriculture, what was

After I left the -- well, actually while I was still at the

So I went part-time at the Forest Products Lab and

1073
Fronczak - Direct by Hayes
1

part-time at the university, and I was a lecturer.

I was a

2

mechanical systems -- well, we had a mechanical systems design

3

group at the time, and I was a professor teaching -- or I'm

4

sorry, I was a lecturer teaching senior design as well as

5

dynamic systems analysis.

6

Q

7

What university are you talking about?

8

A

9

archrivals of Michigan.

Now, you've mentioned "the university" a couple times.

Oh, I'm sorry, it's University of Wisconsin-Madison,

10

Q

What year did you start working at the University of

11

Wisconsin?

12

A

13

think for a second.

14

moved to Madison in '77, and I was at the Forest Products Lab

15

for full-time about three years, and then I started

16

transitioning to the university.

17

would have been about 1980.

18

Q

Do you still work for the University of Wisconsin?

19

A

No.

20

university.

21

Q

22

for the University of Wisconsin?

23

A

24

faculty as a lecturer and professor.

25

professor.

Well, it would have been about 19 -- let's see, I got to
'77, about 1980, about 1980.

Because we

So it was about '70 -- it

I'm an emeritus professor.

I'm retired from the

I retired about four years ago.

Approximately how many years did you work as a professor

30 -- 30 some years, 34 years or so I was at UW in the
Most of the time as a

1074
Fronczak - Direct by Hayes
1

Q

So I'd like to move forward now and talk a little bit about

2

your achievements.
Have you received any -- have you published any

3
4

papers, articles or technical presentations throughout your

5

career, Professor Fronczak?

6

A

7

that.

8

Q

9

this case, can you focus on some that are most relevant with

Yes, I have.

That's part of your job as a professor to do

So you obviously published a large number of them.

For

10

respect to design, tool design?

11

A

12

technical publications.

13

the design activity that I did either at the Forest Products

14

Lab or following subsequent to that at the university.

Well, I've published over 100 papers, articles and
Virtually all of them were based on

A number of mechanical systems that I designed.

15

One

16

of the papers that is part -- I think it's part of the -- part

17

of my vitae, my CV.

18

a -- for surgery.

It should be.

We designed a router for

19

And just mechanical -- mechanical devices.

We have a

20

design for -- the words won't mean anything, but a modified

21

hypocycloid engine.

22

a variety of devices and tools.

23

Q

24

teach classes about mechanical design, tool design?

25

A

You know, some hydraulic pumps and motors,

As a professor at the University of Wisconsin, did you

I have, yes, when I was a professor there.

1075
Fronczak - Direct by Hayes
1

Q

Can you tell the jury about some of those classes?

2

A

Sure.

3

courses, but primarily in the mechanical design area.

4

taught machine design.

We had, as I mentioned earlier, I taught a number of
So I

5

But the main one I think that's -- or the main ones

6

that I think are particularly relevant here, I taught senior

7

design.

8

students will work on projects.

Senior design is a project-based course where the

One example of a project that I think is particularly

9
10

relevant here is the students with my guidance designed a

11

gripping device that would be able to be converted to an

12

expansion device.

13

something.

Because sometimes you want to squeeze

Sometimes you want to expand something.

If you're familiar with snap rings, you have

14
15

internal/external snap rings.

But this was for a very

16

different application.

17

but it still was a gripping tool and expansion tool.

18

I designed a device for a welder.

This was for a surgical application,

We had a welder who

19

had a -- he lost ability with his left hand.

20

hand.

21

torch, but he couldn't hold the device.

22

there.

23

assist him.

24
25

That was his hold

He was still able to hold and control his hand for his

He couldn't hold it there.

He could move it up

So we designed a device to

That was part of my work.

I was a founder member of the -- founding member of
the UW Center for Rehabilitative Engineering and Assistive

1076
Fronczak - Direct by Hayes
1

Technology where we would design --

2

THE REPORTER:

3

THE WITNESS:

4

THE COURT:

5

THE REPORTER:

6

MR. HAYES:

7

THE WITNESS:

8

MR. HAYES:

9

THE WITNESS:

Rehabilitative Center?
I'm sorry.

I'm sorry.

Rehabilitative technology.
Thank you.

Professor Fronczak -Rehabilitative, yeah, I'm sorry.

You got to slow down just a little bit.

10

MR. HAYES:

11

THE WITNESS:

Sure.

I get excited.

I'm sorry.

Taking down everything that you're saying.
That gives the gamut a little bit.

12

BY MR. HAYES:

13

Q

14

taught at the university.

15

reverse engineering.

16

A

Yes.

17

Q

Have you taught any courses at the University of Wisconsin

18

about reverse engineering?

19

A

20

although our senior design course typically would have a little

21

bit of reverse engineering.

22

Sure.

One more question with respect to courses you've

Yes, I did.

We've heard a lot in this case about

Two parts -- or two in two different courses,

But I'm not sure how many years ago, probably about 20

23

years ago, I had a student approach me who had had a summer

24

internship at Ford.

25

we're not doing reverse engineering courses here at Madison?"

And he came back and he says, "How come

1077
Fronczak - Direct by Hayes
He said, "First thing, my whole summer assignment was

1
2

doing reverse engineering at Ford."

It was a student that I

3

knew pretty well, so we got together and we actually proposed a

4

course.

5

engineering.

And we had a senior graduate level course in reverse

6

We called it mechanical dissection because the idea is

7

to take things apart, study them, see how they perform, see how

8

they're made, see how they're manufactured, see what materials

9

they are.
So it's very much like biology, you know, where you

10
11

dissect things, but we were dissecting machines.

12

Machines,

products, devices.
And then also we introduced -- or I introduced, I

13
14

should say, reverse engineering section into our Introduction

15

to Engineering course, which was a common engineering course.
Not every department required it, but the vast number

16
17

of departments in the college required it or at least

18

recommended it and all gave credit for it as a freshman course,

19

and that -- a good section of that was reverse engineering.

20

Q

Professor Fronczak, do you have any patents?

21

A

Yes, I do.

22

Q

Can you talk a little bit about generally the patents that

23

you have?

24

A

25

eight U.S. patents or patent applications.

Sure.

And it says here I've got -- I'm an inventor on
The way it works at

1078
Fronczak - Direct by Hayes
1

Wisconsin is that -- and which is where most of these are.

2

Seven of the eight are while I was at the University of

3

Wisconsin.
What we typically do as a faculty member or a grad

4
5

student or the students, we will assign the rights to the

6

University of Wisconsin, Wisconsin Alumni Research Foundation.

7

That's commonly called WARF, W-A-R-F.
And so we assign our rights over there, and then they

8
9

decide whether they will pursue the patent.

Sometimes they

10

will pursue the patent.

But it's when they have decided to

11

submit an application, that's when, as a faculty member as a --

12

for my CV purposes, that's when I've done my job basically in

13

terms of how the university looks at patents.
And so that's why I say eight U.S. patents or patent

14
15

applications, seven of which fall in that category.

16

Q

17

received any awards?

18

A

Yes, I have.

19

Q

Spend a minute here telling us about the awards you've

20

received throughout your career.

21

A

22

think are -- the ones I'm proudest of, I guess I'd say.

Throughout your career, Professor Fronczak, have you

Well, this is a sampling of them.

I guess it's the ones I

23

The first one was the USDA Superior Service Award.

24

There was -- this was tied to the -- I said I was designing

25

wood veneer processing equipment.

So I have a patent along

1079
Fronczak - Direct by Hayes
1

with two other coinventors.
I led the team, and we have a patent on a powered

2
3

backup roll.

It's a device to help more effectively conserve

4

or peel lumber, peel the log down into veneer and get better

5

yield with better accuracy of the veneer.

6

million dollars' worth of product per year per every plant that

7

it's in.
So I received the patent.

8

It saves about a

I was awarded the patent.

9

And then the USDA Superior Service Award was an award that was

10

given to the -- to me by the Department of Agriculture for this

11

device, which, you know, was quickly adopted by many companies

12

in the industry.

13

Q

You list as your next award the SAE --

14

A

Okay, I'm sorry.

15

Q

-- fellow?

16

A

The next one, SAE fellow.

17

Society of Automotive Engineers, but really it's SAE.

18

I'm an SAE fellow.

SAE, most people think of it as
And so

19

This was awarded to me for my contributions to design

20

education and for the work that I had done on hybrid vehicles.

21

So I had done a lot of research in my life on hybrid vehicles.

22

Work was sponsored by General Motors, Ford, the EPA.

23

And SAE recognized me as a fellow.

It's an honor

24

that's given to the members -- by the members of SAE to members

25

of SAE that they feel have given high contributions to the

1080
Fronczak - Direct by Hayes
1

technology.
And then the Benjamin Smith Reynolds Award is the next

2
3

one.

That's a college of engineering -- University of

4

Wisconsin-Madison College of Engineering teaching award.

5

was given to me in recognition of my contributions to design

6

engineering education at the UW.

It

I was -- my home's mechanical engineering, but I also

7
8

had an appointment in biomedical engineering.

9

a design program in biomedical engineering along with a

10

And I started up

colleague in the biomedical engineering department.
And then UW Teaching Academy, it's along the similar

11
12

lines, but it's not a college of engineering award.

It's a

13

university-wide award to recognize people who have made

14

contributions and have shown particular emphasis throughout

15

their careers on teaching particularly undergraduates, but

16

teaching.
People that are teachers and dedicated to teaching and

17
18

have made accomplishments in the university's mission to

19

produce good students.

20

Q

21

means you're retired from the university.

22

A

That's right.

23

Q

Are you currently doing any other jobs or working on

24

anything else?

25

A

Good engineers in our case.

So you mentioned that you're a professor emeritus.

Sure.

I'm still working.

That

I do consulting work, a number

1081
Fronczak - Direct by Hayes
1

of -- a number of different consulting activities.

2

Cases like

this, I'm a consultant.
But I also am a consultant to a couple local design

3
4

firms in Madison will call me in on occasion on particular

5

projects, particular aspects that I'll consult on.
Sometimes it's a short consultation.

6
7

hour.

It might be a longer consultation.

8

several days of work.

9

It might be half

It might involve

might just be local.

It might involve some traveling.

It

But also I work as a senior mechanical design adviser

10
11

to Marvel Medtech.

That's a local Madison and suburb,

12

Middleton-based medical products startup firm that's based on a

13

patent that a few students and I got when I was teaching the

14

biomedical engineering course.
And so Marvel Medtech is in the process of trying to

15
16

commercialize this.

17

I go over there and work with the engineers, and I'm a

18

consultant regularly on that project.

19

senior mechanical design adviser.

20

Q

21

Medtech?

22

A

23

that we're working on.

24

offshoot.

25

And I work with the engineers.

Every week

I think my title is

What type of product are you working on designing at Marvel

Marvel Medtech, our product -- we only have one product
Well, one product with a little

It's an MRI image-guided breast biopsy positioning

1082
Fronczak - Direct by Hayes
1

device and for -- for identifying very, very early stage

2

tumors, breast cancer tumors in hard-to-find regions.

3

finding BB-size tumors and then being able to identify these

4

tumors and then being able to ablate these tumors.

We're

We're looking at cryogenic ablation, which leaves the

5
6

tissue there, which enables this tissue to continue to generate

7

antibodies to prevent or reduce the likelihood of future tumors

8

from forming.

9

Q

And what benefits does your invention there at Marvel

10

Medtech provide to a patient in general?

11

A

12

going to save lives.

13

don't think.

Well, a couple things.

First of all, it saves -- it's

I mean, there's no question about that, I

But more important -- well, I wouldn't say more

14
15

important thing.

16

also important that it creates a much quicker diagnosis, much

17

less invasive intervention, much smaller level because it's

18

early.

19

Nothing more important than that.

But it's

And the nature of our intervention is long-lasting.
MR. HAYES:

Thank you.

Your Honor, at this time I

20

offer Professor Fronczak as an expert in the relevant art in

21

this case.

22

MR. SKIERMONT:

23

THE COURT:

No objection.

This witness, too, is an expert and will

24

be permitted to offer opinions about these issues.

25

welcome to proceed, Counsel.

You're

1083
Fronczak - Direct by Hayes
1

BY MR. HAYES:

2

Q

3

on the opinions that you've given in this case.

4

A

Sure.

5

Q

Have you given both non-infringement and invalidity

6

opinions in this case?

7

A

Yes, I have.

8

Q

Can we start with the non-infringement opinions?

9

A

Sure.

It's my opinion -- can I have the tools up here?

10

Q

Sure.

Let's grab the tools.

So Professor Fronczak, I'd like to transition now and focus

Did you bring a bunch of tools with you today

11
12

assembled and disassembled?

13

A

14

I'll need it, but they're in those brown envelopes, those brown

15

manila envelopes.

They're in envelopes.

I don't need it right now.

Sometime

(Objects tendered to the witness.)

16

THE WITNESS:

17

Thank you.

Okay, so I'm sorry, back to

18

the question.

19

BY MR. HAYES:

20

Q

21

analysis in this case.

22

A

Right.

23

Q

What generally did you consider?

24

A

I didn't -- you had asked me what opinion I gave.

25

Q

Okay.

So I wanted to start by focusing on your non-infringement

1084
Fronczak - Direct by Hayes
1

A

And my opinion was that the Max Axess wrench does not

2

infringe on either of the two patents, the claims, the asserted

3

claims of the two patents in this case.

4

Q

5

asserted patents?

6

A

7

'470, and I think the other one is '579.

8

Q

9

in coming to your opinions in this case?

And what are those two asserted claims?

There's two asserted patents.

What are those two

I remember one number is

And did you study and analyze the '470 and the '579 patents

10

A

Yes, I did.

11

Q

Did you consider and analyze the claims?

12

A

Yes, I did.

13

Q

And the specifications and figures?

14

A

Yes, I did.

15

Q

Did you consider and analyze the Court's claim construction

16

in performing your non-infringement analysis in this case?

17

A

Yes, I did.

18

Q

Did you consider the level of ordinary skill in the art in

19

the context of your non-infringement analysis in this case?

20

A

Yes, I did.

21

Q

Why?

22

A

Well, level of skill, ordinary skill in the art, I think if

23

you recall back to Dr. Cagan's testimony, I think he was asked

24

some questions about this as well.

25

So the level of ordinary skill in the art, this is at

1085
Fronczak - Direct by Hayes
1

the time of the invention, the people who are familiar with

2

this technology at a certain level and what would be their

3

understanding of the terms of the patent, of what's in the

4

patent.

What does this really mean, what's invented.
So you have to put yourself in the mind of someone of

5
6

ordinary skill in the art at the time of the invention of the

7

patent.

8

Q

9

did you perform those from the perspective of one of ordinary

In this case in performing your non-infringement opinions,

10

skill in the art?

11

A

Yes, I did.

12

Q

What in your opinion, Professor Fronczak, is the experience

13

necessary to be one of skill in the art in this case?

14

A

15

we're in the same -- same -- same level of understanding of

16

this, that it's basically an engineer, one who has a degree in

17

mechanical engineering or a closely related field.

18

year or a couple years of experience in the design of products

19

of comparable complexity.

20

I'm consistent -- I think Dr. Cagan and I, we agree that

And then a

And in this case, we have a fairly straightforward

21

mechanism, but there's a little bit of complexity to it.

22

not a hammer.

It's

It's more complex than a hammer.

23

So an engineer would -- one of ordinary skill in the

24

art would be someone with an engineering degree in mechanical

25

engineering or related field and someone with some experience

1086
Fronczak - Direct by Hayes
1

in a related field doing about the same level of engineering,

2

year or two experience.

3

Q

4

performing your non-infringement opinion in this case was the

5

claims?

6

A

Yes, I did.

7

Q

Was there a particular -- with respect to the '579 patent,

8

was there a particular claim element that you looked at or

9

focused on in performing your non-infringement analysis?

So I think you said one of the things you looked at in

10

A

Well, certainly not at the very, very beginning when I

11

first started looking at this.

12

learned more about the patents and more about the claims and

13

more about the device, it became pretty evident to me at least

14

that one of the cruxes of the invention, it revolved around the

15

gripping element.

But as I progressed through and

You've heard a lot about the gripping element.

16

And so

17

the claims related -- the parts of the claims related to the

18

gripping element became very evident a focus of my attention.

19

Q

20

focused on there is the one that starts, "each at least one

21

gripping element;" is that right?

22

A

23

at the other ones, but the focus quickly became here.

24

Q

25

asserted in this case, but let's start here.

So let's pull up that claim.

That's correct.

The claim element that you're

I want to make sure I looked at -- looked

And we'll go through each one of the claims that are

1087
Fronczak - Direct by Hayes
Josh, if we could pull up the element, "each at least

1
2

one gripping element."

3

A

Can I open these up?

4

THE COURT:

You're welcome to.

5

THE WITNESS:

Thank you.

6

BY MR. HAYES:

7

Q

8

Okay, I'm sorry, yes.

pieces and parts up there.

Professor Fronczak, it seems like you've got a number of

Can you just tell the jury generally what you have

9
10

here before we get to --

11

A

12

Axess wrench, and I disassembled it.

13

Actually I bought a couple, and then I disassembled it.

Sure.

Generally what I have is I went out and bought a Max
I inspected it first.

I took it apart and -- to look and see what all the

14
15

different parts were and to see how it works, to see the

16

insides of how it works.

17

Q

18

specifically the element, "each at least one gripping element."

19

If you could explain to the jury -- this is the element that

20

has the red X on the right side -- what the claim requires with

21

respect to the parts of the gripping element based on the

22

claim, claim 1 of the '579 patent?

23

A

24

says that it's an arm portion configured to engage one of it --

25

of said at least one guide and a force transfer element

Okay.

Sure.

So let's get back to looking at the claim here,

The wording -- the wording of the -- of the claim

1088
Fronczak - Direct by Hayes
1

contiguous with the arm portion.

2

Q

So --

3

A

Oh, I'm sorry, I think I missed your question, sir.

4

Q

So let's take a step back.

5

A

Yeah.

6

Q

At a little higher level, we're looking at the gripping

7

element?

8

A

Right.

9

Q

I'd like you to talk to the jury about based on the claim

10

language, what parts are required or what the gripping element

11

requires.

12

A

Now I'm tracking.

13

Q

Okay.

14

A

Okay.

15

least -- has three things.

16

According to the claim, it has to have a body portion, it has

17

to have an arm portion, and it has to have a force transfer

18

element.

19

Q

20

patent.

21

is claim 9.

22

A

That's correct.

23

Q

Can you explain -- claim 9 is a dependent claim.

24

explain to the jury what that means with respect to what

25

requirements claim 9 must have?

I'm sorry.

We had the gripping element, and it has to have at
It has to have a body portion.

And that's the first of the asserted claims for the '579
The second of the asserted claims for the '579 patent

Can you

1089
Fronczak - Direct by Hayes
1

A

Sure.

The way the patents are laid out is there's a -- can

2

be a number of independent claims and then claims that depend

3

upon the independent claim.

4

independent claim, and then claim 9 is a dependent claim.

5

claims depends upon claim 1.

6

in claim 1.

In this case, claim 1 was the
It

And here we see it's as recited

So it has to have everything that's in claim 1.

So if it was in -- if it wasn't in claim 1, it's not

7
8

in claim 9.

Because in order for it to be in claim 9, it has

9

to be in claim 1.

10

Q

So then claim 9 depends from claim 1.

11

also require the gripping element that we see here?

12

A

13

things in order for it to be an infringing claim.

14

Q

Is there any dispute about that in this case?

15

A

I'm sorry?

16

Q

Is there any dispute about that in this case?

17

A

I don't believe there's any dispute about that.

18

pure and simple.

19

Q

20

which one of the elements are you focused on or limitations are

21

you focused on with respect to claim 16 of the '579 patent?

22

A

23

element has to have a body portion, an arm portion and a force

24

transfer element.

25

Q

That's correct.

Does claim 9 then

It has to have each and every one of these

The final claim of the '579 patent is claim 16.

That's

Again,

I focused on that light grayed limitation where gripping

It has to have those three things.

So all the claims then in the '579 patent require this

1090
Fronczak - Direct by Hayes
1

gripping element limitation?

2

A

That's my understanding, yes.

3

Q

Let's take a quick look at the '470 claims.

4

claim 1 here.

5

subsection C and explain to the jury what's required by

6

subsection C of claim 1 of the '470 patent?

7

A

8

wording is exactly correct the same, but it's very similar.

Okay.

That's my recollection.

You've got two red X's.

It's very, very similar.

Can we start with

I can't remember if the

It has to have a gripping element.

9

This is

The gripping

10

element has to have the same three things.

11

body portion, it has to have an arm portion, and it has to have

12

a force transfer element.

13

those things.

14

Q

15

Can you explain to the jury what claim requirement -- claim

16

limitation you're focusing on there?

17

A

I'm sorry, I missed the first part of your question, sir.

18

Q

Can you explain to the jury --

19

A

Yes.

20

Q

-- the bottom claim limitation that you're focusing on?

21

A

Okay, sure.

22

first element further includes one aligning element."

23

don't think there's been a lot of discussions about aligning

24

elements in this.

25

It has to have a

So it's got to have all three of

One more element here you've got a red X on on the bottom.

Yeah, the bottom one is, it says, "wherein the
And I

Dr. Cagan addressed it, but it's kind of been lost,

1091
Fronczak - Direct by Hayes
1

perhaps lost a little bit in the focus on the gripping -- the

2

gripping element.

3

one aligning element.

4

use this?

5

Q

Sure.

6

A

Okay.

7

what I did is I took out -- there's -- if you remember, there

8

was a number of pins that go -- can you see these holes?

9

There's a number of holes around here.

And so the first element includes at least
If you -- actually it works nice.

Can I

So if we look at this tool, when I disassembled it,

Maybe if you take out your -- you each have a wrench

10
11

here, so you'll see those.

There's six holes around here, and

12

there's pins that go through those holes.
And so pins that go through those holes, they're the

13
14

aligning elements.

If you don't have those pins in there as I

15

have here, the parts don't align.

16

aligned in a certain configuration.

17

Q

18

patent.

19

A

That is correct.

20

Q

Does dependent 9 include all the limitations that we just

21

saw in claim 1?

22

A

23

upon claim 1, it has to have everything that's in claim 1.

24

Q

25

a minute about your non-infringement analysis.

And one more claim here.

So those keeps the parts

Let's look at claim 9 of the '470

Is this a dependent claim again?

That is correct.

Okay.

This is another dependent claim.

Because it's a dependent claim depending

Just take a step back here and talk to the jury for

1092
Fronczak - Direct by Hayes
How many elements do you need to show are not present

1
2

in the Max Axess Locking Wrench such that it is not found to

3

infringe any of the asserted claims in this case?

4

A

5

the allegedly offending device or infringing device doesn't

6

have even just one element or one limitation, then it doesn't

7

infringe.

It has to have each and every one of those to

8

infringe.

If it doesn't have one, it doesn't infringe.

9

Q

If there's one limitation that's not met, then the -- if

And what did you mean to indicate by including the red X's

10

in the right column of each one of the claims, asserted claims

11

we just saw in this case?

12

A

13

Infringement."

14

these boxes, then it would infringe.

Well, if you look to the title of the slide, it says, "No
And if we had green checks on every one of

But if you got a red X, that means it's not there,

15
16

okay?

So the red X indicates that in my opinion, the

17

limitation (c) and then that last line of (d), those

18

limitations are not met in the Max Axess wrench.

19

have those things that need to be there for it to be

20

infringing.

21

Q

22

case -- the Max Axess Locking Wrench is there.

It does not

In performing your non-infringement analysis in this

In performing your non-infringement analysis in this

23
24

case, what did you compare the claims to?

25

A

Well, I compared the claims as construed by the Court to

1093
Fronczak - Direct by Hayes
1

the actual Max Axess wrench.

I said wrench, two wrenches.

2

There's a 6-inch wrench and an 8-inch wrench.
I've got both of them that I looked at.

3

Both of them

4

I bought.

Both of them I took apart, and I looked at both of

5

them.

6

Q

7

considered the patents in this case including the specification

8

in the claims.

So both allegedly infringing wrenches.

You mentioned earlier in doing your analysis, you

Let's take a look at the specification that you

9
10

considered.

11

the jury by this next slide, slide 10?

12

A

13

patent, which you see in that lower left has a picture with the

14

six gripping elements including -- of the '470 patent including

15

the force transfer elements.

16

I've pulled up here -- what are you trying to show

Well, here we have the actual Figure 1 from the '470

So what I did was I extracted a portion of that just

17

so that it's easier to see.

18

that No. 34, No. 36, No. 38, that's a picture of the gripping

19

element in the '470 patent, Figure 1.

20

So in the upper right where we see

Then below that is the wording of the claim language

21

that we just saw basically associated with the '470 patent and

22

we see with the '579 patent.

23

figures are the same and I did the same thing.

24
25

The figure's the same.

The

I took that -- extracted that one just so you can see
a single one because it's a little bit of a mumbled, jumbled

1094
Fronczak - Direct by Hayes
1

mess trying to look at those six of them.

2

Q

3

analysis you considered the Court's claim construction; is that

4

right?

5

A

That's correct.

6

Q

We've got a slide here with the Court's claim construction.

7

Can you talk to the jury a little bit about the terms here and

8

how the Court construed them?

9

A

You mentioned earlier in performing your non-infringement

Sure.

The Court considers things and then will -- where

10

there's argument over what these words mean, then the Court

11

will define what these words or terms mean.

12

word, sometimes it's a term, sometimes it's a phrase.

Sometimes it's a

So it will order a -- it will -- like it says,

13
14

memorandum opinion and order.

It will order that this is what

15

is meant by an arm portion that I need to do -- understand and

16

need to apply when doing the construction -- I'm sorry, when

17

doing the analysis.

18

Q

19

at the claims in this case, did you consider the Court's claim

20

construction?

21

A

Absolutely, yes.

22

Q

Can you tell the jury what we see here on this next slide,

23

slide 12?

24

A

25

start off with the one on the left.

And when doing your non-infringement analysis and looking

Okay.

So what we see is that the wording of the -- let's
What we have is the

1095
Fronczak - Direct by Hayes
1

wording of the '579 patent for the talking about the gripping

2

element.

3

including three things we talked about.

And so we have at least one gripping element

And then beneath it, we have the definition of those

4
5

terms arm portion -- I shouldn't say definition, the

6

construction.

7

and "body portion" as ordered by the Court for both the '579

8

patent and the '470 patent, the two patents that we're looking

9

at in the case.

The construction of those terms "arm portion"

10

Q

Here, we've got the specification of Loggerhead's patents

11

that we just looked at on the left.

12

got the -- we've seen this a lot now, the gripping element from

13

the Max Axess.

And on the right, we've

Can you explain to the jury what you're trying to show

14
15

here?

16

A

17

the figure's the same for both the '470 and the '579.

18

just have one figure there for the Loggerhead patent, and here

19

is the gripping element.

Sure.

Like I said, I extracted one of the patented -- and
So I

We can clearly see an arm on the Loggerhead gripping

20
21

element.

There's no -- I don't think there's any -- anybody

22

that looks at this that doesn't know what the arm is.

23

I'm also showing the Max Axess Locking Wrench gripping element,

24

and these are what I'm comparing when I'm comparing using the

25

Court's claim construction.

And then

1096
Fronczak - Direct by Hayes
I'm seeing does the Max Axess Locking Wrench gripping

1
2

element have all of the elements or all the limitations as

3

construed by the Court.

4

Q

5

Axess Locking Wrench gripping elements?

6

A

Professor Fronczak, did you bring along some of the Max

Yes, I have a bunch here, one fell.
MR. HAYES:

7
8

Let me get it.

Your Honor, may I approach and give these

to the jury?
THE COURT:

9

Sure.

10

THE WITNESS:

11

MR. HAYES:

12

THE WITNESS:

13

MR. HAYES:

Do you want all of them?

Yeah.
That's the ones I have that are loose.

For the record, I'm handing the jury some

14

of the gripping elements from the Max Axess Locking Wrench.

15

Some of them still have the pin, the gripping element or the

16

force transfer element in them, and some of them we've removed

17

the pin.
THE WITNESS:

18

Just so it's clear, those are the ones

19

that I removed from the 8-inch Max Axess wrench.

20

BY MR. HAYES:

21

Q

22

at them, we can continue through the slides here.

23

A

24
25

As the jury passes those around and gets a chance to look

Sure.
MR. SKIERMONT:

Your Honor, could we have a brief

sidebar while the jury's looking at those?

1097
Fronczak - Direct by Hayes
THE COURT:

1

Sure.

(At sidebar outside the hearing of the jury.)

2

MR. SKIERMONT:

3

So we objected to some slides because

4

we thought they were going down this road.

5

on summary judgment, further construed a claim and found that

6

the Max Axess Locking Wrench has an arm portion.

7

seems like we're getting ready to have an -MR. SERNEL:

8
9

The Court ordered

And so it

Summary judgment in your favor, is

that -MR. SKIERMONT:

10

The arm portion of the MALW's gripping

11

element has a portion of the element which engages the guide

12

that has a portion that's relevant.
MR. SERNEL:

13

That's construing in the light most

14

favorable to you to deny summary judgment.

15

for summary judgment.
MR. SKIERMONT:

16
17

This is no different than the

lock.
THE COURT:

18
19

No, no.

You're now asking

I think that's a matter for

cross-examination.
MR. SKIERMONT:

20

Okay.

(In open court in the hearing of the jury.)

21
22

BY MR. HAYES:

23

Q

24

to slide 14 now, Professor Fronczak?

25

A

I think we just talked about slide 13.

Sure.

Can we move forward

1098
Fronczak - Direct by Hayes
1

Q

Can you explain to the jury what you're trying to show here

2

on slide 14 and what you've got on the top and the bottom of

3

these slides?

4

A

5

important for me to understand what is meant by -- you know,

6

what the inventor meant by these terms.

Okay.

So what I have is part of my analysis.

I'm looking at the claims themselves.

7
8

the description, the written description.

9

figures.

It's

I'm looking at

I'm looking at the

I'm also looking at the prosecution history, which is

10

the correspondence between the applicant Loggerhead and the

11

Patent Office in order to understand what they were considering

12

and what the applicant represented as what their understanding

13

was of their invention.

So that's what I'm showing here.

Mr. Buchanan, you saw it just earlier.

14

Mr. Buchanan

15

had a patent, and the gripping element from Mr. Buchanan's

16

patent is shown here.

17

forth between the Patent Office and between Loggerhead's

18

representatives.

And there was some discourse back and

And what we're looking at is the Loggerhead arm -- I'm

19
20

sorry, the Loggerhead gripping element, which shows an arm.

21

And Buchanan, which the Buchanan gripping element which

22

Loggerhead submits does not contain an arm portion.

23

Q

24

with Mr. Owen.

25

A

Another slide here, and I think we've previously seen this
Can you explain what we see here?

That's correct.

This is another response.

If you look in

1099
Fronczak - Direct by Hayes
1

the left, it says response to pending, bunch a numbers,

2

rejection.
And so what we have is that, once again, this is

3
4

additional correspondence between the applicant and the Patent

5

Office and points out that in Buchanan, the force transfer

6

element -- that's that pin that goes through that force

7

transfer or through the gripping element does not contain an

8

arm portion.
It says the force transfer element, the pin of

9
10

Buchanan is directly attached to the body portion.

11

Furthermore, it says Buchanan does not teach or suggest an arm

12

portion.

13

Q

14

on slide 16?

15

A

16

better now from looking at the patent, looking at everything

17

involved.

18

element has to have, what are the different parts of it.

It doesn't have an arm.

Turn to the next slide.

Okay.

What are you trying to show here

So what I'm looking at is we understand a little bit

We understand a little bit better what this gripping

19

And we know that the inventor, Mr. Brown at

20

Loggerhead, had told the Patent Office that this device, this

21

gripping element in Buchanan doesn't have an arm.

22

mean, that's certainly a reasonable position.

23

We're looking now at the right side.

And -- I

I'm looking at

24

and saying, okay, if I'm looking at the Max Axess gripping

25

element and I'm saying I know this block with the pin coming

1100
Fronczak - Direct by Hayes
1

through it on the left doesn't have an arm, is there anything

2

that an engineer, one of ordinary skill in the art, would look

3

at the block on the right that has this pin going through it.

4

Is there anything there that would suggest that this is

5

different with respect to having an arm?

6

So I'm looking at it.

I'm not looking at Buchanan to

7

determine infringement.

I'm just looking at Buchanan to

8

understand what it is was communicated by Mr. Brown, Loggerhead

9

to the Patent Office about what they understood an arm to be.
And then I'm looking at that to inform me and saying,

10
11

okay, we've got this gripping element, this block with the

12

force transfer element coming through it.

13

ordinary skill in the art would look and say does this have an

14

arm or doesn't this have an arm?

15

Q

16

show here on slide 17?

17

A

18

those two images that I had in the previous slide, the

19

Buchanan, which is described as having no arm, the Max Axess

20

Locking Wrench gripping element.

21

no arm.

Let's go ahead to the next slide.

Okay.

Is that what one of

What are you trying to

So what we have is we've got those two pictures,

That, my conclusion is it has

And then I'm looking at the Loggerhead, and I'm

22
23

saying, okay, you know, is there a difference here?

24

something that I'm missing?

25

no.

Is there

And I'm looking at it and saying

Loggerhead has a body portion.

It has the three parts we

1101
Fronczak - Direct by Hayes
1

need.
It has a body portion, that's at 34.

2
3

portion, 36.

It actually has two arms.

4

it can have two, but this one has two.

5

It has an arm

And it can have one,

transfer element, 38, going through it.

And then it has a force

I'm looking and I'm comparing the Loggerhead device to

6
7

the Max Axess gripping element using the Court's claim

8

construction, using my understanding of what Mr. Brown said his

9

patent was with respect to the gripping element, and that's

10

what I'm showing here.

11

Q

12

which includes the actual claim language and the Court's claim

13

construction.

Okay.

So let's go back to claim 12 -- or sorry, slide 12,

In light of all the information that you've just

14
15

considered, can you talk to the jury about how you performed

16

your final non-infringement analysis with respect to the claim

17

language, the Court's claim construction and the actual Max

18

Axess Locking Wrench gripping element that the ladies and

19

gentlemen of the jury have some to look at.

20

A

21

construction order on the bottom to control the analysis.

22

That's the thing that we have to apply, okay, in this analysis.

23

So I'm using the Court's order, the Court's claim

And I'm looking at the claim language.

24

the construction of the device.

25

information that I have.

I'm looking at

I'm looking at all the

And I'm saying using the Court's

1102
Fronczak - Direct by Hayes
1

order, how would one of ordinary skill in the art look at this

2

arm portion, look at the body portion and interpret,

3

understand -- what would they understand these claims to mean?
And based on that, I think one of ordinary skill in

4
5

the art, you know, an engineer is going to look at this, an

6

engineer with a little bit of experience and a little bit

7

experience in mechanisms design is going to look at this and

8

say, okay, yeah, this thing, you know, Loggerhead has a patent,

9

has what we call an arm portion.

I understand that.

And they're going to look at the gripping element for

10
11

the Max Axess wrench.

And using the Court's claim

12

construction, they're going to say it's just not there.

13

doesn't have an arm portion.

14

Q

15

before, you had a second red X here on the bottom of claim 1 of

16

the '470 patent.

17

that limitation.

It

When we looked at your slides with the red X's on them

I'd now like to take a minute and look at

Can you kind of re-orient us all here with what we

18
19

should be looking at.

20

there to kind of get us oriented in what we need to look at

21

with respect to this final limitation of claim 1 of the '470

22

patent.

23

A

24

Appreciate it.

25

Okay.

It might be easiest if you used the tool

If you wouldn't mind, get your tools back out.
Or just look at somebody's.

So what we have -- remember the aligning elements,

1103
Fronczak - Direct by Hayes
1

we've got these different parts.

We've got first -- a first

2

element, second element, and then we have the gripping elements

3

we talked about.

There's some other things going on.

But then we have these pins that go through the holes,

4
5

and hopefully you can see this here.

Here, I'll put it on a

6

light background.

7

You can see where I ground off the heads of those aligning

8

elements, okay.

And so you should be able to see the holes.

And so there's holes left in this part.

Now, this part is the second element.

9
10

first element.

This is the second element.

11

argument about that.

12

This isn't the

There's no -- no

this over here is the second element.

We all -- I think everybody agrees that

And these pins over here, these rivets are pressed --

13
14

during manufacturing, they're pressed into this.

15

pressed through -- oops, I'm sorry.

16

THE COURT:

17

THE WITNESS:

18

They're

That's all right.
Excuse me.

They pass through these

slots over here.
Let me put this like this so you can see a little

19
20

better.

21

there is one, two, three, four, five, six arch slots.

22

pins pass through.

23

They pass through those slots.

This is the first element.

The slots you see
So those

They pass through it.

24

They've got to be clearance there.

They have to pass freely.

25

Because when this tool opens and closes, when you open and

1104
Fronczak - Direct by Hayes
1

close, when you squeeze the handles, these aligning pins stay

2

fixed to the second element and pass through and don't --

3

they're not tight.
They're not -- they're not included in that first

4
5

element -- or second element.

6

in the second -- the second element.

7

included in the first element.

I'm sorry, they're not

They pass through the first element.

8
9

I'm sorry, they're not included

And that I

believe is actually what Dr. Cagan testified and showed during

10

his -- oh, you got it up already.

11

Q

12

presentation.

So we've got the next slides here that are from Dr. Cagan's

In the context of this first and second element

13
14

discussion we've just been having, can you use slide 18 here to

15

help the jury better explain what it is you've been saying?

16

A

17

causing me problems is the first element, second element

18

because these are reversed in the patent and in the Max Axess

19

wrench.

Sure.

And one of the things that, you know, keeps on

So the first element in the patent is on the outside.

20
21

That's the outside plates.

22

because of the way things are defined here, are the inside

23

ones.

24

have to interpret it the way the claims are written.

25

The first element of the Max Axess,

That's because of the way the claims were written.

We

So what we have here is an illustration that Dr. Cagan

1105
Fronczak - Direct by Hayes
1

artfully prepared, really nice presentation, that shows the

2

first element, which is that second center portion of the Max

3

Axess.
And then highlighted in blue are these aligning

4
5

elements that I've just been talking about.

6

Q

7

requires with respect to the aligning elements --

8

A

Sure.

9

Q

-- and the first and second element?

10

A

Okay.

11

Q

Should we move to the next slide, would that be easier?

12

A

Okay.

And so could you talk a little bit about what the claim

So the --

Yeah, yeah, thank you.

Okay.

13

So two things and I'm trying to -- it's a

14

little fuzzy.

I'm trying to... oh, okay, yeah.

So the

15

highlighted area in blue, we're talking about these aligning

16

elements.
"Along respective set at least one guide wherein the

17
18

first element further includes at least one aligning element,"

19

then a couple other limitations on that alignment, aligning

20

element "such that it is disposed between an adjacent pair of

21

guides.
So the guides, remember, are these slots over here,

22
23

okay?

So we have to have aligning elements between those

24

slots, and then they have to be parallel to the force transfer

25

elements.

1106
Fronczak - Direct by Hayes
The force transfer elements are the pins that don't

1
2

go -- don't have anything to do with these slots, okay?

They

3

don't have anything to do with these slots.

4

ones that engage these curved slots, the slots that go in.

5

That's clear, no question.

6

elements go.

The pins are the

That's where those force transfer

But it has to be included in the first element, okay?

7
8

So remember in the Max Axess, this is the first element.

9

pins go -- the aligning pins -- I got one here -- goes through

10

The

these, but this thing moves back and forth.
On the other hand, these things are pressed in here.

11
12

They're headed over.

The material is deformed.

And in order

13

to get these pins free from the second element -- this is the

14

second element -- I had to grind them off.

15

I ground off the heads.

That's why these don't have

16

the second head on them.

17

a punch.

18

And they have to be for the wrench to function properly.

19

And then I had to drive them out with

But to get them through here, they're free and clear.

So consequently, my argument here is that these -- one

20

of ordinary skill in the art would look at these pins and say,

21

well, are they included in the first element?

22

included in the second element?

23

Are they

Are they included in both?

Now, looking at this a little bit more, you look at --

24

if my memory is correct, Dr. Cagan said the force transfer

25

element passed through the first element, therefore, they are

1107
Fronczak - Direct by Hayes
1

included in the first element.

I don't want to quote him --

2

I'm not saying that's the exact words.

3

exact words or very close to it.

I think those were the

But you look at it, the gripping elements also pass

4
5

through.

We can see those gripping elements.

6

part.

7

element.

8

are included in the first element.

9

That's the great

okay?

Those gripping elements also pass through the first
But there's no argument that the gripping elements
They're a separate thing,

Furthermore, one of ordinary skill in the art in my

10
11

opinion would look at the way these pins are attached.

And it

12

would be reasonable for them to say, yeah, they're included in

13

this because they are formed such that they are part of this.

14

They don't move with respect to it.

15

They're positioned by it.

They're captured by it.

They're held by it.

Therefore, they're -- in my opinion, they're included

16
17

by it, okay, or included in that.

18

this.

19

I'm sorry, I keep doing that.

20

Q

21

analysis here, so let's go back to where we started.

22

just looking at the '470 claims.

23

They are not included in

They pass through it, but they pass through for -- oops,
I apologize.

Just about ready to finish up on your non-infringement
We were

Can you summarize for the jury what your opinion is,

24

Professor Fronczak, with whether or not the Max Axess infringes

25

any of the asserted '470 patent claims in this case?

1108
Fronczak - Direct by Hayes
1

A

My opinion is that it does not infringe on any of the

2

asserted claims of the '470 patent.

3

Q

4

for the jury what your non-infringement opinion is with respect

5

to whether or not the Max Axess Locking Wrench infringes any of

6

the asserted claims of the '579 patent in this case?

7

A

8

does not infringe on any of the asserted claims of the '579

9

patent.

And then with respect to the '579 patent, can you summarize

It does not -- it's my opinion that the Max Axess wrench

10

MR. HAYES:

So, your Honor, I'm about ready to --

11

THE WITNESS:

12

MR. HAYES:

I'm about ready to transfer to invalidity.

13

THE COURT:

I think this is a good time for a break.

I've just given --

14

It's almost 5:00 o'clock.

15

9:30 tomorrow morning.

16

THE WITNESS:

17

THE COURT:

18
19

All right, ladies and gentlemen,

Can we get the gripping elements?

The professor wants his toys back.

(Laughter)
THE WITNESS:

Thank you, your Honor.

20

(Off-the-record discussion.)

21

(Jury exits courtroom at 4:54 p.m.)

22

(Pause in proceedings.)

23
24
25

MR. HAYES:

Just a quick clarification on whether we

can talk to the witness or not.
THE COURT:

Oh, I should have -- I should have talked

1109
Fronczak - Direct by Hayes
1
2

about that.
MR. HAYES:

If we tender him for cross, it's no.

But

3

if he's not tendered and it's our witness, we represent him, he

4

can talk.

I just want clarification.

5

THE COURT:

Except you don't represent your experts.

6

MR. PELTZ:

And, your Honor, even furthermore, we just

7

asked them to confirm they wouldn't talk to their witness just

8

like your Honor instructed us not to talk to our witness when

9

he was on direct.

10

different.

11

back the Judge?

And they said, No, we want the rule to be

And I said, Are you kidding?

We're going to call

Do you think she's going to agree to that?

12

MR. HAYES:

I just want clarification.

13

THE COURT:

I don't change the rules midstream.

14

MR. PELTZ:

Thank you.

15
16

(Adjourned at 5:00 p.m.)
C E R T I F I C A T E

17
18

We, CHARLES ZANDI and LISA H. BREITER, certify that the

19

foregoing is a correct transcript of the record of proceedings

20

in the above-entitled matter.

21
22
23
24
25

/s/ CHARLES R. ZANDI
CHARLES R. ZANDI, CSR, RPR, FCRR
Official Court Reporter

May 10, 2017

/s/ LISA H. BREITER
LISA H. BREITER, CSR, RMR, CRR
Official Court Reporter

May 10, 2017

1528

1

because he was aware of what our design was.

2

Q.

3

before the May 22 exchanges that Mr. Skiermont is focused

4

on -- how much was the design changing, in terms of the

5

gripping mechanism or the basics of the product?

6

A.

7

much at all.

And in the last month or so leading up to that -- so

During that time frame, I don't believe it was changing

8

MR. SERNEL: No further questions, your Honor.

9

MR. SKIERMONT: Nothing further, your Honor.

10
11

THE COURT: The witness may step down.
(Witness excused.)

12
13

THE COURT: I think you have another video,
correct?

14

MS. TINKHAM: That's correct, your Honor.

15

THE COURT: Go ahead with that.

16

MS. TINKHAM. LoggerHead calls Mr. Peng Li. He is

17

a current employee at Apex. He is the vice president of

18

engineering and program management. His video is about

19

15 minutes.

20

THE COURT: All right.

21

After this video, we will take a break.

22

(Excerpt of videotaped deposition of Peng Li was played

23

in open court.)

24
25

MS. TINKHAM: Your Honor, we just have one last
video. It's only six minutes long.

1529

1
2

THE COURT: I am going to have you hang on for six
minutes. That concludes the plaintiff's willfulness case.

3

Then we will take a relatively short lunch break,

4

because I know it's a Friday afternoon. You people want to

5

get back to deliberating.

6

We do have some testimony from the defendants.

7

Their estimate -- by the way, they have been careful about

8

this -- they think they are going to be calling Mr. Owen for

9

about an hour and then Mr. Pope, a video for 14 minutes.

10

Then we will hear closings again. They won't be as

11

long as yesterday's, obviously. So we have a little more

12

ground to cover. But I want to get this case to you as

13

quickly as possible.

14
15

So let's go ahead with the last six minutes, and
then we will take a short lunch break.

16

MS. TINKHAM: Plaintiff LoggerHead's final witness

17

is Ms. Jill Lowe. She is a current employee at Apex. She is

18

the vice president of national retail.

19

(Excerpt of videotaped deposition of Jill Lowe was

20

played in open court.)

21
22

THE COURT: All right. That concludes the
plaintiff's case on willfulness.

23

Ladies and gentlemen, we are going to take a short

24

recess, because I want to get the case to you as quickly as

25

we can.

1530

1

Why don't we get back here at about five minutes

2

before 1:00. You just have half an hour. I know that's not

3

a lot of time.

4

(Jury out at 12:22 p.m.)

5
6

MR. SKIERMONT: Your Honor, could we just read some
admitted exhibits on the record?

7

THE COURT: Sure.

8

MS. TINKHAM: LoggerHead moves to admit the

9

following exhibits:

10

From Mr. Arvia's video deposition, PX 455.

11

From Mr. Li's video deposition, PX 64, 97, 113,

12

161, 169, 356, and 504.

13
14

THE COURT: Any objection to the admission of those
materials?

15

MR. BLOCK: We will confirm our list.

16

THE COURT: That's fine. Okay.

17

MS. TINKHAM: Excuse me, your Honor. Just two

18

more.

19
20
21
22

From Ms. Lowe's deposition, PX 357, 358, 503, and
505.
And then from Mr. Reese's, PX 30, PX 429, PX 467,
PX 470, PX502.

23

THE COURT: Counsel, if you can, confirm that.

24

MR. BLOCK: Certainly.

25

THE COURT: All right.

1531

1

MR. SERNEL: Your Honor, if I could just read a

2

quick JMOL into the record?

3

THE COURT: Sure.

4

MR. SERNEL: So defendants move for judgment as a

5

matter of law with respect to the allegation of willful

6

infringement.

7

We just heard LoggerHead's theory that somehow the

8

defendants did not -- and Apex in particular -- did not rely

9

on a final opinion regarding the product. The evidence, I

10

think, showed that there was constant consultation with a

11

patent attorney from the beginning of the process through the

12

end of the process, clearing the product before it was ever

13

sold or shipped to Sears.

14

There is no question that Apex relied upon

15

Mr. Owen's analysis and opinions in designing the product.

16

They passed that information on to Sears, who relied on

17

Apex's due diligence in that respect.

18

I think this is a textbook case of a company's

19

doing it the right way. So I don't think there is any

20

willful infringement here.

21

The halo standard that we know applies requires

22

egregious conduct; willful, malicious infringement intending

23

to infringe. There is not a shred of evidence that that's

24

what occurred here. I think that's why Judge Darrah granted

25

summary judgment on the issue. That ruling still stands

1532

1
2

today.
We believe that, now that you have heard all the

3

evidence that plaintiffs have on this issue, you should grant

4

JMOL right now, at the close of plaintiff's evidence, because

5

no reasonable juror could find willful infringement in these

6

circumstances.

7
8
9

THE COURT: You know, I do think the defendants
have a good case on willfulness.
I know that the plaintiff is going to -- I believe

10

plaintiffs will argue that, whatever their lawyers may have

11

told them, defendant went out on their own anyway and did

12

other things. I think that's going to be the argument. I

13

need to consider that, and I will consider it.

14

Again, I know -- I am very aware of Judge Darrah's

15

rulings. Let me be clear that I am really not so much, at

16

this point, throwing that out by proceeding here as much as

17

recognizing that if I adhere to his ruling, either simply

18

adhere to it or grant this motion now or grant a similar

19

motion at the conclusion of all your case or if -- no matter

20

what the jury does, come out differently, all those things

21

could happen. Those things could all happen.

22

One of the reasons I think it makes sense for us to

23

proceed now, however, is, there is always the chance the

24

Court of Appeals will see things differently. I think the

25

safer course generally is to have a full record.

1533

1

So if the Court of Appeals says the district court

2

was wrong. It was appropriate for that to go to a jury. The

3

jury was properly instructed. Here is what the jury decided,

4

and they want to leave that in place, then fine.

5

I am just telling you all these things, because I

6

don't want anybody here to think, well, either, A, that I

7

have got my mind made up in any direction, or that anyone

8

should feel 100 percent comfortable about this situation.

9

I continue to believe this is a case that really

10

should settle. I wish your clients would be talking about

11

that with you and with one another.

12
13
14

But right now, we are going to press forward. I
will see you in about a half an hour.
Let me tell you why I am rushing them so much. I

15

have to leave here middle of the afternoon. I have got

16

another judge standing by to take the verdict. I will

17

certainly be here until all the evidence is in. I won't

18

leave until the record is complete. But if I need to leave

19

before the verdict, there will be at least two other judges

20

standing by to take the verdict.

21

MR. SKIERMONT: Thank you, your Honor.

22

THE COURT: Thanks.

23
24
25

(A luncheon recess was taken at 12:27 p.m.)F/j